What's in a [Business] Name? Trademark Fair Use in Today's Digital Climate

AuthorAllison S. Lovelady
PositionAllison S. Lovelady is a partner in the West Palm Beach office of Shullman Fugate. In addition to intellectual property, she focuses on defamation, privacy, and media issues. She can be reached at alovelady@shullmanfugate.com.
©2019. Published in Landslide®, Vol. 11, No. 5, May/June 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or
disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
Here’s an easy one: a client e-mails you because she
would like to use a hashtag to promote her com-
pany’s new winter apparel line. Then, she tells you
the hashtag is #WinterIsComing. Is it permissi-
ble? The hashtag originates from the popular HBO
Game of Thrones franchise and, although arguably
not a prominent lead, is indisputably associated with the show.
But what if the client is not using the hashtag as a source iden-
tier for winter apparel? What about fair use?
Generally, trademark fair use occurs when an accused
infringer can show (1) it did not use the mark as a trade-
mark; (2) the use is descriptive of its goods or services; and
(3) it used the mark fairly and in good faith.1 In today’s fast-
changing digital climate, the selection and fair use of a mark
looks different. What if that same client’s mark is a #hashtag
or is a keyword simply used to generate website visitors?
And, a search can be problematic—searching for common
law uses of a mark may generate hundreds or thousands of
similar hashtags. What if the mark is, or was, a slogan that
summary judgment, the court found it clear that the defen-
dants’ use of “SSM Health” along with the phrase “Express
Clinic” tipped in favor of fair use, as “Express Clinic”
described a characteristic of the defendants’ product insofar
as the clinic provides medical treatment in a quick and conve-
nient setting, and not a source identier.
When a Mark Bears Resemblance to a Fictional
Business or Mark
Enter SpongeBob SquarePants, who collects his paycheck at
the ctional restaurant The Krusty Krab. This same restaurant
was the subject of the 2018 case Viacom v. IJR.4 Viacom, as
creator of SpongeBob SquarePants, was common law owner
of “The Krusty Krab” and sued IJR when it learned that IJR
intended to use “The Krusty Krab” as the name of a restau-
rant chain in California and Texas. The district court granted
summary judgment. In afrming summary judgment, the
Fifth Circuit analyzed whether Viacom had ownership in a
legally protectable mark, and whether IJR’s use of the mark
Allison S. Lovelady is a partner in the West Palm Beach ofce of Shullman Fugate. In addition to intellectual property, she focuses on
defamation, privacy, and media issues. She can be reached at alovelady@shullmanfugate.com.
What’s in a [Business]
Name? Trademark Fair Use
in Today’s Digital Climate
By Allison S. Lovelady
quickly turned viral on social media? The nature of social
media, ability to share, and easy access to all forms of content
quickly have blurred the line between fair use and infringe-
ment. In this article, we review recent cases interpreting
use of trademarks in today’s climate, including #hashtags,
domain names, and a viral video punchline.
In the #WinterIsComing example above, perhaps an
argument could be made that the hashtag is merely descrip-
tive of the apparel line as geared toward the winter season,
although not as obvious. “A descriptive term ordinarily names
a characteristic of a product or service” and is not used as a
trademark.2 For example, in Midwest Medical v. SSM Health
Care, the plaintiff owned a trademark for “Express Care of
Mt. Vernon” for walk-in health services.3 The defendants,
who were using the name “SSM Health Express Clinic” for
walk-in health services, posited that the phrase “Express
Clinic” was descriptive of the defendants’ services. On
created a likelihood of confusion as to the source, afliation,
or sponsorship.5 Indeed, how could a mark that is not “used in
commerce” as a source identier of a specic good or service
be used as a basis for infringement? In addressing a thresh-
old issue, the Fifth Circuit found that unregistered names for
items within a television show, even those items not featured
as a prominent lead, can form a basis for infringement. In
reaching that nding, the court noted that “The Krusty Krab”
appeared in 166 of 203 SpongeBob episodes, and stated that
“The Krusty Krab’s central role in the multi-billion-dollar
SpongeBob franchise [was] strong evidence that it is rec-
ognized in itself as an indication of origin.”6 The court also
pointed to other protectable but ctional supporting elements,
such as General Lee from Dukes of Hazard and Clark Kent’s
employer the Daily Planet. Based on the Fifth Circuit’s
holding, it seems likely that use of #WinterIsComing in con-
nection with an apparel line may not be permissible.

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT